1103.03    Application Based on Court Determination

37 C.F.R. § 2.99(f)  When a concurrent use registration is sought on the basis that a court of competent jurisdiction has finally determined that the parties are entitled to use the same or similar marks in commerce, a concurrent use registration proceeding will not be instituted if all of the following conditions are fulfilled:

  • (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party to the court proceeding; and
  • (2) The court decree specifies the rights of the parties; and
  • (3) A true copy of the court decree is submitted to the examining attorney; and
  • (4) The concurrent use application complies fully and exactly with the court decree; and
  • (5) The excepted use specified in the concurrent use application does not involve a registration, or any involved registration has been restricted by the Director in accordance with the court decree.

If any of the conditions specified in this paragraph is not satisfied, a concurrent use registration proceeding shall be prepared and instituted as provided in paragraphs (a) through (e) of this section.

An application for concurrent registration that is based on a final determination by a court of competent jurisdiction must assert use in commerce of the mark sought to be registered. See TBMP § 1103.01(a). The application must also specify and contain all the elements required for an unrestricted registration [ Note 1.], as well as the additional requirements for concurrent use, namely, the requested geographic area, the goods and/or services, and (if applicable) mode of use for which applicant seeks registration, and also state, to the extent of applicant’s knowledge, the concurrent lawful use of the mark by others, setting forth their names and addresses, their areas of use, the goods and/or services on or in connection with which their use is made, the mode of their use, the periods of their use, and the registrations issued to or applications filed by them, if any. [ Note 2.] In addition, the applicant must submit a copy of the court decree upon which it relies.

When an application for concurrent registration is based on a final determination by a court of competent jurisdiction that applicant is entitled to concurrently use its mark, a concurrent use proceeding will not be instituted, that is, the application (if found otherwise acceptable, published, and not opposed, or opposed unsuccessfully) will be forwarded to issue without having to go through a concurrent use proceeding, provided that all of the following conditions, specified in 37 C.F.R. § 2.99(f), are met, namely:

  • (1) The applicant is entitled to registration subject only to the concurrent lawful use of a party or parties to the court proceeding; and
  • (2) The court decree specifies the rights of the parties; and
  • (3) A true copy of the court decree is submitted to the trademark examining attorney; and
  • (4) The concurrent use application complies fully and exactly with the court decree, [ Note 3.] and
  • (5) The excepted use specified in the concurrent use application does not involve a registration, or, if it does, the involved registration has been restricted by the Director in accordance with the court decree.

If any of the above conditions are not satisfied, a concurrent use registration proceeding will be prepared and instituted. [ Note 4.] The Board’s notice of institution will include a web link or web address to access the concurrent use application proceeding contained in Office records as provided by 37 C.F.R. § 2.99(d)(1). If the first four conditions are met, but the Director, in accordance with the court decree, has not already restricted an involved registration, a concurrent use proceeding will be instituted solely for the purpose of restricting the involved registration in accordance with the court decree. In such case, the Board sends out an order instituting the proceeding and directing the registrant to show cause why its registration should not be restricted in accordance with the court decree. If no good cause is shown, the registration is ordered restricted, applicant is found entitled to the registration sought, and the concurrent use proceeding is dissolved.

When and if the application is approved for publication, it is marked (by the trademark examining attorney) with the following statement:

REGISTRATION LIMITED TO THE AREA COMPRISING _____________. PURSUANT TO THE DECREE OF _____________. CONCURRENT REGISTRATION WITH _____________.

The area granted to applicant by the court is inserted in the first blank, together with any other conditions or limitations imposed by the court. The second blank is filled in with the name of the court, proceeding number, and date of decree. The third blank is filled in with the number(s) of the involved application(s) or registration(s) owned by the other party or parties to the court proceeding. If any such party does not own an application or registration of its involved mark, then the name and address of the party is inserted in the third blank space.

If all of the conditions are not satisfied, a concurrent use proceeding is necessary. When and if the application is approved for publication, it is marked (by the trademark examining attorney) with the following statement:

SUBJECT TO CONCURRENT USE PROCEEDING WITH _____________. APPLICANT CLAIMS EXCLUSIVE RIGHT TO USE THE MARK IN THE AREA COMPRISING _____________.

The first blank is filled in with the number(s) of the involved application(s) or registration(s) owned by the other party or parties to the proceeding. If any such party does not own an application or registration of its involved mark, then the name and address of the party is inserted in the first blank space. The second blank is filled in with the area for which applicant seeks registration.

The Board’s notice of institution will include a web link or web address to access the concurrent use application proceeding contained in Office records. [ Note 5.] See TBMP § 1106.

Jurisdictional requirement, and requirement that there be no likelihood of confusion need not be met. An application for concurrent registration on the basis of a court determination of applicant’s right to concurrently use its mark in commerce does not need to meet the jurisdictional requirement of use in commerce prior to the applicable date specified in Trademark Act § 2(d), 15 U.S.C. § 1052(d). For information concerning the dates specified in Trademark Act § 2(d), see TBMP § 1103.01(b). Similarly, such an application is not subject to the requirement that the Director determine, prior to issuance of a concurrent registration, that confusion, mistake, or deception is not likely to result from the continued concurrent use by the parties of their marks. These two requirements are conditions precedent to the issuance of a concurrent registration by way of a concurrent use proceeding before the Board, but they are not conditions precedent to the issuance of a concurrent registration on the basis of a court decree. The sentence in Trademark Act § 2(d) permitting the Director to issue concurrent registrations when a court of competent jurisdiction has finally determined that more than one person is entitled to use the same or similar marks in commerce is wholly independent of these two provisions. Thus, a concurrent registration may (and should, if otherwise appropriate) be issued on the basis of a court decree even though the application for registration does not claim use in commerce prior to the applicable date specified in Trademark Act § 2(d), and even though there may be likelihood of confusion by reason of the concurrent use of the marks of the parties to the court proceeding. [ Note 6.]

NOTES:

 1.   The application must comply with the requirements of 37 C.F.R. § 2.42(a), described in TBMP § 1103.01(c)-(f) and 37 C.F.R. § 2.32  et. al., 37 C.F.R. §2.44  and 37 C.F.R. §2.45, if applicable.

 2.   See 37 C.F.R. § 2.42(b).

 3.   See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630, 635 (CCPA 1976) (application was properly limited geographically and as to the form of the mark, but the specimens appeared to violate the judgment); Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412, 419-20 (CCPA 1961) (applicant entitled to concurrent use application provided it contains conditions and limitations corresponding to those contained in the prior court judgment).

 4.   See 37 C.F.R. § 2.99(f).

 5.   37 C.F.R. § 2.99(d)(1).

 6.   See Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 189 USPQ 630 (CCPA 1976); TMEP § 1207.04(f). Cf. Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 293 F.2d 685, 130 USPQ 412, 416-17 (CCPA 1961). For information concerning the examination by the trademark examining attorney of a concurrent use application, see TMEP § 1207.04.